JURISDICTION REPORT: CANADA
INEQUITABLE ERRORS BY THE TRADEMARKS OFFICE: QUASHING A TRADEMARK REGISTRATION
Ashley Dumouchel Shapiro Cohen
For the first time, the Federal Court has granted an order by which a Canadian trademark registration was quashed and the matter was sent back to the Registrar of Trade-marks to consider a Statement of Opposition against the application, where the statement had been filed with the registrar prior to the expiry of the advertisement period, but had not been considered by it (London Life Insurance Company v Registrar of Trade- marks and Debt Freedom Canada Inc).
In Canada, the Registrar of Trade-marks has a legal duty to consider a Statement of Opposition filed against an advertised application. Tis duty consists of either allowing an opposition to proceed where the statement raises a substantial issue for decision, or rejecting the opposition where it does not.
In this case, a Statement of Opposition had been filed against an advertised trademark application, but despite the registrar not having rejected the opposition, the mark proceeded to registration. Upon learning of
the
registration of the mark, the potential opponent commenced an application for judicial review in respect of the registrar’s (i) inadvertent failure to exercise its duty to act fairly; and (ii) actions outside its jurisdiction. Te applicant in this judicial review and the owner of the registered trademark both agreed that the circumstances warranted an order granting the relief sought, namely, the quashing of the registration and the return of the matter to the registrar to carry out its duty to consider the Statement of Opposition.
While the order quashing the registration was issued upon the consent of the trademark registrant, it nevertheless indicates the court’s acceptance of the reasoning within the written representations that were presented to it by the applicant seeking the relief. In particular, where a Statement of Opposition has been filed in respect of an advertised application, it is not open to the registrar to allow the trademark unless the opposition has been deemed to be frivolous, or the opposition has been decided in favour of the trademark applicant.
In Sadhu Singh Hamdard Trust v Canada (Register of Trade-marks), an earlier case before the Federal Court of Appeal, a potential opponent requested an extension of time to file a Statement of Opposition, and while the request was received by the registrar, the request was not considered and the mark registered. However, the current case is distinguishable in that a provision of the Canadian Trade-marks Act provides that in such a situation, the registrar may withdraw the application from allowance at any time before registration if it has failed to consider a request for an extension of time to file a Statement of Opposition. In this case, there was no statutory remedy available for the potential opponent to take advantage of.
54 World Intellectual Property Review July/August 2012
Te request for relief in this case was therefore founded upon the fact that no adequate alternative remedy was open to the potential opponent, other than the quashing of the registration and mandatory consideration of the Statement of Opposition by the registrar, thereby putting the potential opponent in the position it would have been in but for the failure of the registrar to carry out its duty. It was open to the potential opponent instead to seek the expungement of the registered trademark, but such proceedings must be brought in the Federal Court, as opposed to before the registrar, and place heavier burdens on the party seeking to expunge the mark than would be on an opponent of an unregistered trademark.
If the applicant is successful in registering its mark, it may have a right of action against the registrar, in respect of any interim infringements that may have occurred in the period aſter any opposition should have been concluded.
While the precedential value of this case is difficult to gauge, it is important to note that where an error—which results in an opponent, through no fault of its own, not being allowed to pursue its opposition—is made by the registrar, there is hope that the court will exercise its equitable jurisdiction, quash the registration, and send the matter back so that the application and opposition will take their normal course.
Ashley Dumouchel is an associate lawyer with Shapiro Cohen. She can be contacted at:
adumouchel@shapirocohen.com
www.worldipreview.com
“THE APPLICANT IN THIS JUDICIAL REVIEW AND THE OWNER OF THE TRADEMARK BOTH AGREED THAT THE CIRCUMSTANCES WARRANTED AN ORDER GRANTING THE RELIEF SOUGHT, NAMELY, THE QUASHING OF THE REGISTRATION.”
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